444 F.

2d 1331

CONTOUR SAWS, INC., Plaintiff, Appellee,

v.
The L. S. STARRETT COMPANY, Defendant, Appellant.
Nos. 71-1081.
Nos. 71-1082.

United States Court of Appeals, First Circuit.

June 29, 1971.

James R. Custin, Milwaukee, Wis., with whom Robert L. Thompson,

Boston, Mass., and Ira Milton Jones, Milwaukee, Wis., were on the brief,
for Contour Saws, Inc.
Herbert P. Kenway, Boston, Mass., with whom Robert J. Horn, Jr., and
Kenway, Jenney & Hildreth, Boston, Mass., were on the brief, for The L.
S. Starrett Co.
Before ALDRICH, Chief Judge, McENTEE and COFFIN, Circuit Judges.
COFFIN, Circuit Judge.

Our prior opinion in this action for infringement of plaintiff's Anderson Patent,
No. 3,315,548, now Re. 26,676, disposed of all issues on the merits except the
question whether the disclosures in earlier German Patent No. 974,524
rendered obvious the tempering process described in plaintiff's patent. 428 F.2d
314 (1st Cir. 1970). Both patents relate to the process of making metal-cutting
band saw blades, which require a combination of hard, high-speed steel cutting
teeth and a flexible, low alloy steel carrier body. Both patents teach a process of
heating the bimetal tool to a high temperature of 2150-2275F, appropriate for
hardening high-speed steel, and then tempering it at an unconventionally high
temperature. While the first step overheats and degrades the softer spring steel
used for the carrier body, the subsequent tempering proves to rectify the
damage of the prior overheating.

The question which remained in our minds was whether the German patent,

which described the carrier body as comprising steel alloyed with manganese or
manganese and silicon and identified the proportions in two "particularly"
usable alloys, could be said to have been applicable to or to have suggested
application to the steel covered by the Anderson patent. The latter had
identified as "entirely satisfactory" an alloy known as AISI-SAE No. 6150, but
stated that "steel alloys other than this one will meet the requirements."1
3

We therefore remanded the case to the district court for resolution of the
following issues:

"Taking the German patent as referring to band saw blades, did it indicate to
one skilled in the art that the curative effect of the tempering would apply in the
case of blade steels, (1) approximating 6150, or (2) reasonably found to be
within plaintiff's patent, having in mind the broad language thereof, or (3) did it
at least sufficiently suggest such possibility, so that to try its effect on such
steels would not be inventive? If any of these questions are answered in the
affirmative, judgment is to be entered for defendant of invalidity of the patent."
428 F.2d at 319.

The district court answered the first and third questions in the affirmative but
gave no answer to the second inquiry. Plaintiff appeals.

Three experts called by defendant testified, in substance uniformly, that the

German patent indicated that the curative effect of the tempering described
therein would apply to a steel approximating No. 6150, and to steels covered by
the Anderson patent, and that the German patent suggested that it would be
obvious to try its process on a steel such as No. 6150. Considerable supporting
testimony was adduced to the effect that, as of the date of the German patent,
both German and American documents listed specifications for hot worked
spring steels, said to be similar in their composition to both the steels in the
German patent and No. 6150. In particular, a German list of four high grade
steels contained one which was testified to as "essentially the same" as one steel
described in the German patent, a second as "exactly the same" as the other
steel described in the German patent, and a third as "equivalent" in the range of
proportions for each component to No. 6150. According to defendant's experts,
a metallurgist interested in putting into practice the German patent and finding
that the precisely described steels were not available, would begin by choosing
a steel from such a list, including No. 6150. Plaintiff's witnesses, while
uniformly answering the three critical questions in the negative, conceded on
cross-examination that the tempering taught by the German patent compensated
for the prior overheating as to No. 6150 and as to the other alloys.

Plaintiff now for the first time challenges the form of the questions put by
defense counsel to defendant's experts and the findings of the court on the
ground that they spoke as of the present, rather than as of the date of the
German patent, and therefore involved the use of hindsight, contrary to the
command of 35 U.S.C. 103. All three of defendant's experts were initially
asked whether they had read this court's opinion, which, as plaintiff
acknowledges, made clear the time frame for inquiries as to obviousness. On
that basis they were then asked whether the German patent "indicates" that the
curative effect of tempering "would" apply to blade steels approximating No.
6150 steel and steels covered by plaintiff's patent and "would" suggest that the
process be tried on a steel such as No. 6150. Their answers to all questions were
"Yes". At no time during direct examination and there were at least nine
opportunities or during cross-examination, was there any indication from
plaintiff's counsel that he was aware of or unhappy with any possible ambiguity
as to the time frame in which the questions and answers as to obviousness were
given. Moreover, as we have indicated, the testimony as to the equivalence of
various steels was based on their known existence as of the date of the earlier
patent. To labor the point on appeal as one of clear error is either ingenuousness
or its opposite, but, in any case, not persuasive.

Similarly labored is the plaintiff's argument that the district court erred in
misapplying the "obvious to try" test. Plaintiff asserts that the "findings that
involve the `obvious to try' test are not responsive to this Court's questions."
We find this contention difficult to understand, for the third question asked by
us, with which plaintiff finds no defect, was answered by a simple affirmative
by the district court. Plaintiff elsewhere indicates that it is referring to
comments or questions by the court during trial, the criticism again being that
the court was calling for appraisal with the benefit of hindsight. Here, too, the
time frame was by no means clearly in the present, and now objecting counsel
made no effort to clarify. In any event, it is clear that the thrust of the inquiries
at trial was the obviousness of applying the specific method, as distinguished
from a general direction of experimentation, taught by the German patent to
substantially equivalent known alloys, Koppers Company v. Foster Grant Co.,
396 F.2d 370, 372 (1st Cir. 1968). The factual teaching is that the
unconventional tempering compensated for prior overheating; the inference
following from such fact is that substantially equivalent or similar alloys would
react the same way. "[S]uch an inference of fact may, at times, be enough to
justify drawing the ultimate conclusion of law that the claimed subject matter as
a whole would have been obvious under section 103." Application of
Marzocchi, 439 F.2d 220, 223 (C.C.P.A., 1971).

One argument of greater substance is based on the testimony of one of

plaintiff's employees, Brabec, who had conducted tests on a steel resembling

one described in the German patent and on No. 6150. The test results, testified
to but not documented, showed that the tempering process after overheating
taught by the German patent increased the resistance to fatigue of No. 6150 but
decreased the resistance of the German-type steel. The argument is that the
tests show the German patent to be inoperable and hence of no relevance to
obviousness. While the tests indeed demonstrated that the German process
worked better with No. 6150 than with one of the steels described in the
German patent, we do not draw the conclusion that the German patent did not
work with the German-type steel. The difficulty lies in comparing a highly
heated but moderately tempered steel which, as Brabec himself testified,
while hard enough to cut, had saw teeth too brittle for use with a highly
heated and unconventionally tempered steel which was neither too soft nor
too brittle. The latter, indeed, seems to us to be usable as a band saw blade. That
its resistance to fatigue was somewhat less than a steel which would not be
usable does not impress us except perhaps as some indication that the German
tempering process did not "fully" compensate for initial overheating. In sum,
even if Brabec's testimony were the only evidence in the case, we would not be
disposed to conclude that a single purpose test on only one of two described
steels proved overall inoperability of the German patent.
10

But Brabec's testimony was not the only evidence as to operability.

Contradicting this was the testimony of Dr. Adams, one of defendant's expert
witnesses in the prior trial who was called adversely by plaintiff. Dr. Adams
testified that his opinion that the teachings of the German patent were "true and
correct" was based in part on his reading of reports of tests conducted by both
parties. We cannot say that the court was compelled to credit Brabec and
discredit Adams.2 We conclude that the district court's affirmative responses to
our inquiries, based on expert opinion, were not in error.

Attorney Fees
11

Defendant cross-appealed from the district court's denial of its motion

requesting attorney fees in connection with (1) services in the original trial, (2)
services on the first appeal, and (3) services in the district court on remand. The
court denied the motion "on the ground that it raises matters not within the
limited purposes for which this case has been remanded to this court."
Defendant claims that this litigation falls within the narrow category of
"exceptional cases" in which a court by statute, 35 U.S.C. 285, may award
reasonable attorney fees. Defendant had claimed counsel fees in its prior appeal
to this court. Plaintiff contends that by our refusal to respond to this claim in
our prior opinion, we foreclosed further consideration of the issue.

12

Such was not our intention. If our failure to make explicit reference to fees
could not have been taken to leave the matter open, see Perkins v. Standard Oil
Co., 399 U.S. 222, 223, 90 S.Ct. 1989, 26 L.Ed.2d 534 (1970), and Kemart
Corp. v. Printing Arts Research Laboratories, 232 F.2d 897, 898 (9th Cir.
1956), the force of our language identifying the several factual misleadings of
the court might have so been taken. We acknowledge, however, that the district
court would have been better served had we been explicit.

13

We therefore now say that the instances of misdescription of the Belgian and
German patents of which we complained in our prior opinion constitute this an
exceptional case within the intendment of 35 U.S.C. 285 and justify an award
of attorney fees to defendant for the prior appeal. Cf. General Instrument Corp.
v. Hughes Aircraft Co., 399 F.2d 373 (1st Cir. 1968). While defendant, in the
interests of judicial economy and with some logic, urges us to direct the district
court to award fees for efforts in that court, particularly in the first trial, we
have found no case where such direction was given and are reluctant to trench
upon the court's traditional discretion. Accordingly, we leave it to the district
court to decide whether attorney fees should be awarded for services before it.
Finally, we see no such exceptional circumstances in the second appeal as to
justify an award for appellate services.

14

Judgment as to the invalidity of the patent in suit affirmed; remanded solely for
consideration of the question of awarding attorney fees in the District Court. On
the question of costs and fees in this court, we will receive written submissions,
the first to be filed by defendant in 21 days.

Notes:
1

No. 6150, in addition to containing carbon, magnesium, and silicon, also

contains chrome and a small proportion of vanadium. The characteristics of
other suitable steels were phrased in terms of tolerance to certain hardening
temperatures, range of final hardness after tempering, resistance to fatigue, and
low cost

Indeed Brabec on cross-examination acknowledged that the German patent

taught both that heating the blade to the right temperature for high speed steel
would overheat the carrier and that thereafter tempering below 600C would
compensate for the damage done by overheating. Even if one of the steels
described in the German patent proved in a test to be unsuitable, the impact of
the patent's teaching on obviousness would not necessarily be eliminatedCf.
United States v. Adams, 383 U.S. 39, 52, 86 S.Ct. 708, 15 L.Ed.2d 572 (1966).